ConocoPhillips Company v. In-Depth Compressive Seismic, Inc. et al

Filing 57

MEMORANDUM OPINION AND ORDER on Claim Construction (Signed by Judge Sim Lake) Parties notified. (aboyd, 4)

United States District Court
Southern District of Texas

ENTERED
April 26, 2019

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
CCONOCOPHILLIPS COMPANY,
Plaintiff,
v.

IN-DEPTH COMPRESSIVE SEISMIC,
INC., and IN-DEPTH GEOPHYSICAL
INC.,
Defendants.

§
§
§
§
§
§
§
§
§
§
§

David J. Bradley, Clerk

CIVIL ACTION NO. H-18-0803

MEMORANDUM OPINION AND ORDER

This action is brought by plaintiff, ConocoPhillips Company,
against defendants, In

De~pth

Compressive Seismic Inc. and In-Depth

Geophysical, Inc., under the Patent Laws of the United States, 35
U.S. C.

1,

§

Patents: 1
entitled

(1)

et

seq.,

U.S.

"Marine

for

Patent

Seismic

infringement
No.

Data

of

8,897,094
Acquisition

four
("the

United
'094

Using

States

Patent"),

Designed

Non-

Uniform Streamer Spacing," issued on November 25, 2014; 2 (2) U.S.
Patent No.

9, 632, 193

("the

'193 Patent") ,

entitled "Compressive

Sensing," issued on April 25, 2017; 3 (3) U.S. Patent No. 9,823,372
("the

'372

Patent")

entitled,

"Controlled

Spaced

Streamer

1

Plaintiff's Complaint and Request for Preliminary Injunction
("Plaintiff's Complaint"), Docket Entry No. 1.
2

Exhibit 1 to Plaintiff's Complaint, Docket Entry No. 1-2.

3

Exhibit 2 to Plaintiff's Complaint, Docket Entry No. 1-3.

Acquisition," issued on November 21,
No.

("the

9,846,248

'248

Patent"),

2017; 4 and

( 4)

entitled

U.S.

Patent

"Seismic

Data

Acquisition Using Designed Non-Uniform Receiver Spacing," issued on
December 19, 2017. 5

Plaintiff has also asserted claims against the

defendants for false and misleading statements under the Lanham
Act, 15 U.S.C.

§

1125.

meaning of nine terms
in the

'193

terms. 6
1384,

Plaintiff and defendants disagree about the
usE~d

Patent and ask the court to construe the disputed

See Markman v.

1387

in the '248 Patent and three terms used

(1996)

Westview Instruments,

Inc.,

116 S.

Ct.

("We hold that the construction of a patent,

including terms of art within its claim, is exclusively within the
province of the court.").
In support of its preferred constructions plaintiff has filed
Plaintiff's Opening Claim Construction Brief ("Plaintiff's Opening
Brief")

(Docket Entry No. 40), in response to which defendants have

filed Defendant's Response

(Docket Entry No.

41) ,

plaintiff has

replied in Plaintiff's Reply Claim Construction Brief ("Plaintiff's

4

Exhibit 3 to Plaintiff's Complaint, Docket Entry No. 1-4.

5

Exhibit 4 to Plaintiff's Complaint, Docket Entry No. 1-5.

6

The parties originally disagreed about the meaning of two
additional terms used in the '094 Patent and the '372 Patent,
respectively. But defendants have agreed to the plain and ordinary
meaning for those terms.
See Defendants'
Responsive Claim
Construction Brief ("Defendants' Response"), Docket Entry No. 41,
p. 5.
Page numbers for docket entries in the record refer to the
pagination inserted at the top of the page by the court's
electronic filing system, CM/ECF.
-2-

Reply")

(Docket

Entry No.

4 4) ,

and defendants

have

replied

in

Defendants' Claim Construction Sur-Reply ("Defendants' Sur-Reply")
(Docket Entry No. 46).

The parties have also filed their P.R. 4-3

Joint Claim Construction and Prehearing Statement

("Joint Claim

Construction Statement")

(Docket Entry No. 38).

On March 28, 2019,

the

hearing

parties

court

argument

conducted
on

four

a

of

the

(Docket

Entry

ConocoPhillips

No.

Company's

effect

of

considering

remains

the

the

terms. 7

50),

and

presented

the

hearing

on

Briefing

filed
after

Plaintiff
Markman

The proper construction of eleven

in dispute.

parties'

After

plaintiff

Supplemental

"preamblE?"

the

Supplemental Briefing after Markman

Hearing (Docket Entry No. 51).
claim terms

which

disputed

defendants filed Defendants'
Hearing

at

one

The parties also dispute the
claim term.

arguments,

the

After

evidence,

carefully
and

the

applicable law, the court construes the disputed terms as stated
below.

I.
In Markman,

Legal Standard for

116 S.

Ct.

Cla~

at 1387,

Construction

the United States Supreme

Court held that the construction of patent claims is a matter of
law exclusively

for

the

court.

When the

parties

dispute

the

meaning of particular claim terms,

7

See Minutes, Docket Entry No. 47.
Transcript, Docket Entry No. 52.
-3-

See also Markman Hearing

the judge's task is not to decide which of the
adversaries is correct.
Instead the
judge must
independently assess the claims, the specification, and
if necessary the prosecution history, and relevant
extrinsic evidence, and declare the meaning of the
claims.
Exxon Chemical Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1556
(Fed. Cir. 1995), cert. denied, 116 S. Ct. 2554

(1996).

Courts begin claim construction by ascertaining the "ordinary
and customary meaning" of disputed claim terms.

Phillips v. AWH

Corporation, 415 F. 3d 1303, 1312 (Fed. Cir. 2005)

(en bane), cert.

denied,

126

S.

Ct.

1332

(2006)

(quoting

Vitronics

Corp.

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).

v.

"[T]he

ordinary and customary meaning of a claim term is the meaning that
the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective
filing

date

of

the

patent

application."

Id.

at

1313

(citing

Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc.,
381 F.3d 1111, 1116 (Fed. Cir. 2004)).

"[T]he person of ordinary

skill in the art is deemed to read the claim term not only in the
context of the particular claim in which the disputed term appears,
but

in

the

context

specification."

of

the

entire

patent,

including

Id.

In some cases, the ordinary meaning of claim language as
understood by a person of skill in the art may be readily
apparent even to lay judges, and claim construction in
such cases involves little more than the application of
the widely accepted meaning of commonly understood words.
See Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001)
(holding that the claims did "not require elaborate
-4-

the

interpretation") . In such circumstances, general purpose
dictionaries may be helpful.
In many cases that give
rise to litigation, however, determining the ordinary and
customary meaning of the claim requires examination of
terms that have a particular meaning in a field of art.
Because the meaning of a claim term as understood by
persons of skill in the art is often not immediately
apparent, and because patentees frequently use terms
idiosyncratically, the court looks to "those sources
available to the public that show what a person of skill
in the art would have understood disputed claim language
to mean."
Innova, 381 F.3d at 1116.
Those sources
include "the words of the claims themselves,
the
remainder of the specification, the prosecution history,
and extrinsic evidence concerning relevant scientific
principles, the meaning of technical terms, and the state
of the art."
Id. at 1314

(quoting Innova, 381 F.3d at 1116).

"Generally speaking·,

[courts]

indulge a

'heavy presumption'

that a claim term carries its ordinary and customary meaning."
Fitness,

Inc. v. Brunswick Corp.,

2002).

"For example,
(~,

structure
specific

subset

a

:if an apparatus

noun)

of

288 F.3d 1359,

without

structures

claim recites

limiting

(~,

1366

with

that
an

CCS

(Fed. Cir.
a

general

structure
adjective),

to

a

[the

court] will generally construe the term to cover all known types of
that

structure

that

are

supported

by

the

Renishaw PLC v. Marposs Soc:ieta' per Azioni,
(Fed.
Co.,

Cir.

1998).

133 F.3d 860,

Ct. 52

(1998)

See,

~'

865-66

patent

disclosure."

158 F.3d 1243,

Virginia Panel Corp.

v.

1250

MAC Panel

(Fed. Cir. 1997), cert. denied,

119 S.

(term "reciprocating" is given its ordinary meaning

and not limited to mere linear reciprocation); Sjolund v. Musland,
847 F.2d 1573, 1581-82 (Fed. Cir. 1988)

(refusing to limit "baffle"

to rigid baffles and "panel" to panels of lattice construction) .

-5-

There are several exceptions to the general rule that claim
terms carry their ordinary and customary meaning.

A "claim term

will not receive its ordinary meaning if the patentee acted as his
own

lexicographer

and

clearly

set

forth

a

definition

of

the

disputed claim term in either the specification or prosecution
CCS

history."

Fitness,

288

F.3d

at

See

1366.

also

Hormone

Research Foundation, Inc. v. Genentech, Inc., 904 F.2d 1558, 1563
(Fed. Cir. 1990), cert. dismissed, 111 S. Ct. 1434 (1991)

("It is

a well-established axiom in patent law that a patentee is free to
be his or her own lexicographer . . . and may use terms in a manner
contrary to or inconsistent with one or more of their ordinary
meanings.") .

A claim term may also be interpreted more narrowly

than it otherwise would be "if the intrinsic evidence shows that
the patentee distinguished that term from prior art on the basis of
a particular embodiment,

expressly disclaimed subject matter, or

described a particular embodiment as important to the invention."
I d. at 1366-67
Corp.,

164

ordinary

(citing Spectrum International,

F.3d

meaning

1372,
based

1378
on

(Fed.

Cir.

statements

Inc. v. Sterili te

1998)
that

(limiting

distinguished

invention from prior art); SciMed Life Systems,
Cardiovascular Systems,
2001)

Inc.,

242 F.3d 1337,

"all

-6-

the

Inc. v. Advanced

1343-44

(Fed.

(limiting claim term based in part on statements

specification indicatinq that

term's

embodiments" of the

Cir.

in the
claimed

invention used a particular structure) ;
Consolidated Industries,
1999)

Inc.,

and Toro Co.

199 F.3d 1295, 1301-02

v.

White

(Fed. Cir.

(limiting claim term based in part on statements in the

specification describing a particular structure as "important to
the invention")).

"A claim term also will not have its ordinary

meaning if the term 'chosen by the patentee so deprive[s] the claim
of clarity' as to require resort to the other intrinsic evidence
for a definite meaning."
Associates,
1999)).

Inc.

v.

Id.

at 1367 (quoting Johnson Worldwide

Zebco Corp.,

175

F.3d 985,

990

(Fed.

Cir.

And "[a]s a matter of statutory authority, a claim term

will cover nothing more than the corresponding structure or step
disclosed in the specification, as well as equivalents thereto, if
the patentee phrased the claim in step- or means-plus-function
format."

Id.

(citing 35 U.S.C.

§

112

<J[

6).

Courts rely on two types of evidence when considering claim
construction disputes:

(1) intrinsic evidence (i.e., the language

of the claim itself, the patent specification, and the prosecution
history of the patent) and (2) extrinsic evidence (i.e., evidence
external

to

the

patent

and

prosecution

history

such

dictionaries, treatises, and expert and inventor testimony).
Fitness, 288 F.3d at 1366.

-7-

as
CCS

A.

Intrinsic Evidence
The language of the claim is "'of primary importance, in the

effort

to

Phillips,

ascertain precisely what
415 F.3d at 1312

568, 570 (1876)).

it

is

(quoting Merrill v.

7 S.

is

patented."

Yeomans,

94 U.S.

This is "[b]ecause the patentee is required to

'define precisely what his invention is.'"
Dunbar,

that

Ct.

7 2,

7 ~i

( 18 8 6) ) .

Courts,

Id.

(quoting White v.

therefore,

carefully

consider the context within which a particular term is used in an
asserted claim,

as well as how the term is used in other claims

within the same patent.
also be helpful.

Id. at 1314.

Other intrinsic sources can

For example, "the specification 'is always highly

relevant to the claim construction analysis'" and can be either
dispositive or "the single best guide to the meaning of a disputed
term."

Id. at 1315 (quoting Vitronics, 90 F.3d at 1582).

See also

CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1153 (Fed. Cir.
1997), cert. denied sub nom. Marchon Eyewear v. Tura LP, 118 S. Ct.
1039

(1998)

("[T]he

patent

drawings

are

highly

construing the . . . limitations of the claims.").

relevant

in

While "[i]t is

therefore entirely appropriate for a court, when conducting claim
construction, to rely heavily on the written description [i.e., the
specification]

for

guidance

as

to

the meaning of

the

claims,"

Phillips, 415 F.3d at 1317, it is important that the specification
be used only to interpret the meaning of a claim, not to confine
patent claims to the embodiments described therein.

-8-

Id. at 1323

("although

the

specification

often

embodiments of the invention,

describes

very

specific

we have repeatedly warned against

confining the claims to those embodiments").
The patent's prosecution history should also be considered
when offered for purposes of claim construction.
F.3d at 1317.

Phillips,

415

The prosecution history "consists of the complete

record of the proceedings before the PTO and includes the prior art
cited

during

the

examination

of

the

patent."

Id.

"[T]he

prosecution history can often inform the meaning of the

claim

language by demonstrating how the inventor understood the invention
and whether the inventor limited the invention in the course of
prosecution,
otherwise

making

the

be."

represents

an

claim
But

ongoing

scope

"because

negotiation

narrower
the

than

prosecution

between

the

PTO

it

would
history

and

the

applicant, rather than the final production of that negotiation, it
often lacks the

clarity of the

specification and thus

useful for claim construction purposes."
B.

is

less

Id.

Extrinsic Evidence
The

court

may

also

look

to

extrinsic

evidence,

including

dictionaries, treatises, and expert testimony, to help it reach a
conclusion as to a term's meaning.

See Phillips, 415 F.3d at 1317-

18 (citing Vitronics, 90 F.3d at 1583).
that

extrinsic

evidence

may

only

The court must be mindful

supplement

or

displace or contradict -- the intrinsic evidence.
-9-

clarify Id. at 1319.

not

II.

Construction of Disputed Ter.ms

The parties dispute the construction of nine terms used in the
'248 patent, and three terms used in the '193 patent.
terms in the

'24 8 patent are:

( 1)

The disputed

"two horizontal directions,"

(2) "both horizontal directions," (3) "in at least one horizontal
direction," (4) "in at least one direction," (5) "deliberately nonuniform,"

(6)

"the deliberately non-uniform direction,"

non-uniform spacing direction,"

(8)

(7)

"the

"the non-uniform direction,"

and (9) "wherein the receivers are not aligned in at least one of
the two horizontal directions."

'193

(1) "determining optimal sampling grid during seismic

patent are:
data

The disputed terms in the

reconstruction,"

( 2)

"deriving

a

mutual

coherence

proxy,

wherein the mutual coherence proxy is a proxy for mutual coherence
when S is over-complete and wherein the mutual coherence proxy is
exactly the mutual coherence when S is a Fourier transform," and
(3) "stochastic global optimization method."
A.

Ter.ms from the '248 Patent
1.

"Two Horizontal Directions" and Related Terms
(a)

Disputed
Term
"two
horizontal
directions"

"Two Horizontal Directions"
Patent

'248 claims
1, 10, 14
and 15

Plaintiff's
Construction
Plain and ordinary
meaning.

-10-

Defendants'
Construction
Along each source or
receiver line (in-line)
and between each source
or receiver line
(cross-line).

Citing Phillips, 415 F.3d at 1314, and asserting that "[t]he
'248

Patent

horizontal

does

not

set

directions,' " 8

out

a

special

plaintiff

argues

definition
that

the

for

'two

term

"two

horizontal directions"
is easily understood and needs no construction.
For
example, looking down at a piece of paper, there are two
horizontal directions on the paper (figuratively referred
to as, e.g., left/right and up/down, north/south and
east/west, or simply the "x" and "y" directions).
This
understanding of "two horizontal directions" is nothing
more than application of the widely accepted meanings of
these words. 9
Defendants respond that their proposed construction of "two
horizontal directions" to mean "along each source or receiver line
(in-line) and between each source or receiver line (cross-line)" is
"consistent within the context of the claims, the specification,
and

the

prosecution

history. " 10

In

support

of

their

proposed

construction defendants cite (1) the detailed descriptions of the
arrangements in FIGS. 2-5 and 7-10 which "refer[] to spacing along
each source or receiver line
source

or

receiver

line

(also referred to as in-line)

spacing

(i.e.

between

each

source

and
or

receiver line-also referred to as cross-line);" 11 (2) the critical
question identified in the specification, i.e., "how variable can

8

Plaintiff's Opening Brief, Docket Entry No. 40, p. 12.

9

Id. at 11-12.

10

Defendants' Response, Docket Entry No. 41, p. 19.

11

Id. at 18 (citing '248 Patent, Docket Entry No. 1-5 at 7:3,
7-8, 48-52; 8:5-20, Table 1).
-11-

we space the lines and stations and still recover our wavefield
accurately, " 12 and ( 3) statements that plaintiff made to distinguish
the

'248

Patent from prior art during the prosecution history,

i.e., that
[c]laims 1, 11 and 16 recite methods of acquiring marine
seismic data by intentionally introducing non-uniform
spacing between seismic receivers and/ or seismic sources.
More specifically, the spacing between receiver
lines can vary (59ab vs 59bc in FIG. 5) as well as the
spacing between receivers within a receiver line (57 of
FIG. 5), which account for the variation along two
horizontal directions (FIG. 5 represents a top view) . 13
Defendants argue that this prosecution history "confirms that the
spacing

along

receiver line

each

receiver

(cross-line)

line

(in-line)

and

between

each

accounts for the variation along two

horizontal directions. " 14
Plaintiff responds that "Figures 6 and 11 in the '248 patent
provide

undisputable

directions'

are

not

intrinsic
limited

evidence

to

'in-line'

that
or

'two

horizontal

'cross-line.' " 15

Plaintiff argues:
Tellingly, Defendants cite Figures 2-5 and 7-10 and omit
any reference to Figures 6 and 11 in their argument.
Instead, they state their position is supported by
"almost every embodiment."
To be sure,
the
embodiments that Defendants fail to mention are the

12

Id.

(citing '248 Patent at 4:27-28)

13

Id. at 18-19 (quoting Conoco' s Appeal Brief, Exhibit H, p. 4,
Docket Entry No. 41-9, p. 5).
14

Id. at 19.

15

Plaintiff' s Reply, Docket Entry No. 44, p. 6.
-12-

embodiments shown in Figures 6 and 11 that
contradict their proposed construction. 16

directly

Defendants

[defendants']

reply

that

plaintiff

"misapplies

construction because the specification uses source and receiver
lines to describe all the figures -

including figures

6 and 11

where the sources and receivers are not aligned, and lines are not
illustrated

between

the

sources

and

receivers. " 17

Defendants

explain that
[a] lthough figures 6 and 11 do not illustrate lines
between the receivers, it is clear from their description
that each includes "an inventive arrangement of lines of
seismic receivers."
Dkt. 41-3 ('248 Patent) at 3:4-6;
20-22.
Likewise, none of the figures illustrate lines
between the sourcE! points, however, the figures are
consistently referred to as illustrating source and
receiver lines.
Dkt. 41 at p. 14. 18
After carefully considering all of the evidence the court
concludes that the term "two horizontal directions" is sufficiently
clear to make even resort to a dictionary unnecessary.
America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373 (Fed. Cir.
2004)

(as a general rule ordinary English words "whose meaning is

clear and unquestionable" need no further construction) .

Neither

party has argued the existence of a customary meaning in the art
that differs from or contradicts the plain and ordinary meaning
stated

by

the

plaintiff.

Nor

does

anything

in

either

16

Id. at 7.

17

Defendants' Sur-Reply, Docket Entry No. 46, p. 7.

-13-

the

specification

or

the

prosecution

history

clearly

support

the

defendant's contention that the plaintiff intended to use the term
"two horizontal directions" in a manner other than according to its
plain and ordinary meaning.

Although the specification discloses

source and receiver lines,

those lines are discussed only with

respect to specific examples of the invention described in the
specification, and "[a]s a general rule claims of a patent are not
limited to the preferred embodiment

. . or to the examples listed

within

Dow Chemical

the patent

specification."

States, 226 F.3d 1334, 1342 (Fed. Cir. 2000).
F.3d at 1117

Co.

v.

United

See also Innova, 381

("[P]articular embodiments appearing in the written

description will not bE! used to

limit claim language that has

broader effect.").
Defendants also argue that the plaintiff ascribed a special
meaning to the term "two horizontal directions" in the prosecution
history.

See Spectrum International, 164 F.3d at 1378-79 (explicit

meanings given to claim terms in order to overcome prior art will
limit those terms accordingly) .
that during prosecution of the

In particular, defendants argue
'248 patent plaintiff argued in a

June 8, 2011, appeal brief that
Claims 1, 11 and 16 recite methods of acquiring marine
seismic data by intentionally introducing non-uniform
spacing between seismic receivers and/ or seismic sources.
More specifically, the spacing between receiver lines can
vary ( 59ab vs 59bc in FIG. 5) as well as the spacing
between receivers within a receiver line (57 of FIG. 5),
which account for the variation along two horizontal
directions (FIG. 5 represents a top view).
This non-14-

uniform or irregular spacing can acquire seismic data
that can be more accurately reconstructed.
Clay is deficient because it does not teach the
feature described above.
Contrary to the Examiner's
assertion,
FIG.
7 of Clay does not disclose the
limitation "wherein the receivers are not aligned in at
least one of the two horizontal directions." 19

Defendants argue that these statements in the June 8,
appeal

brief

"clearly

confirm[]

that

the

spacing

2011,

along

each

receiver line (in-line) and between each receiver line (cross-line)
accounts

for

the

variation

However,

defendants

along

overlook

referred to only one figure,

the

two
fact

horizontal
that

the

directions. " 20
appeal

brief

Figure 5 of the '248 application, a

figure that expressly showed spacing between receiver lines and
between receivers within a line.

The argument cited by defendants

was focused on Figure 5 and neither characterized all embodiments
as falling within the description of that one figure nor clearly
disavowed embodiments represented in other figures not addressed in
that brief.

See Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d

1352, 1358 (Fed. Cir. 2004)

("Absent a clear disavowal or contrary

definition in the specification or the prosecution history,

the

patentee is entitled to the full scope of its claim language.").
To the contrary, the appeal brief stated that "Claims 1, 11 and 16
. . . intentionally introduc[e] non-uniform spacing between seismic

19

Appeal Brief, Exhibit H, Docket Entry No. 41-9, p. 5.

20

Defendants' Response, Docket Entry No. 41, p. 19.
-15-

receivers and/or seismic sources." 21

This broad description of non-

uniform spacing is consistent not only with Figure 5 but also with
Figures 6 and 11 which do not depict any in-line or cross-line
deployment

of

The

receivers.

patentee's

description

of

an

embodiment where receive:c lines and source lines are present sheds
no

light

on

the

meaning

of

"two

horizontal

directions"

in

embodiments where receiver lines and source lines are not present,
~'

Instead, this exchange is an example of

Figures 6 and 11.

how carefully-crafted arguments in support of patentability can
avoid

creating

ambiguous

or

adverse

prosecution

history.

By

stating clearly and particularly that the statements in the brief
described the embodiment shown in Figure 5, the applicant ensured
that those of ordinary skill in the art

as well as courts,

if

need be - could evaluate the import and scope of the statements.
Thus, because this argurr,ent was plainly limited to the embodiment
shown in Figure

5,

it

cannot be

said to be a

clear statement

limiting the scope of "two horizontal directions" in general.
Defendants thus have not shown that sufficient reasons exist to
import a limited definition of this term into the clear language of
the claims.
Neither the term "in-line" nor the term "cross-line" used in
the defendants' proposed construction appear in the
and

as

21

defendants

recognize,

"[t] he

term

'two

'248 Patent,
horizontal

Appeal Brief, Exhibit H, Docket Entry No. 41-9, p. 5.
-16-

refers to the lateral spacing between seismic

directions'

receivers and/ or between seismic source points, " 22 i.e., not between
seismic receiver lines or seismic source lines.
supported by the

l~nguage

This conclusion is

of the claims in which the term "two

horizontal directions" occurs because each of those claims clearly
states that the spacing in "two horizontal directions" refers to
spacing between any two receivers or any two sources, not between
any two receiver lines or source lines.

In pertinent part the

patent states:
The invention claimed is:
1.

A method of acquiring seismic data comprising the
steps of:
a.

10.

A method of acquiring seismic data comprising the
steps of:
a.

22

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 aliqned in at least one
of the two horizontal directions and wherein
the spacinq 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 smallest
spacing;

deploying receivers in a survey area and
identifying seismic source points within the
survey area where each source point 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

Defendants' Response, Docket Entry No. 41, p. 18.
-17-

receivers are not aligned in at least one of
the two horizontal directions and wherein the
spacing between any two seismic source points
in the deliberately non-uniform direction
varies by a distance of at least five percent
between the largest spacing and smallest
spacing;

14.

A method of acquiring seismic data comprising the
steps of:
a.

deploying receivers in a survey area where
each receiver is laterally spaced from one
another in two horizontal directions and
identifying source points wherein each source
point is laterally spaced from one another
wherein the lateral spacing for each of the
source points and for each of the receivers is
deliberately non-uniform in at least one
horizontal direction, wherein the receivers
are not aligned in at least one of the two
horizontal
directions
and
wherein
the
horizontal 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
smallest spacing and further wherein the
horizontal spacing between any two seismic
source points in the deliberately non-uniform
direction varies by a distance of at least
five percent between the largest spacing and
smallest spacing. 23

The court concludes that the term "two horizontal directions"
is not limited to spacing "along each source or receiver line (inline)

or between each :source or receiver line

(cross-line)" as

defendants argue but, instead, needs no construction and is subject
only to is plain and ordinary meaning.

23

'248
added).

Patent,

10:30-42,

11:24-36,
-18-

and

12:6-24

(emphasis

(b)

Terms Related to "Two Horizontal Directionsn
Plaintiff's
Construction

Patent

Disputed
Term

Defendants'
Construction

"both
horizontal
directions"

'248 claims
2, 11, 15

Plain and ordinary
meaning.

Both of the two
horizontal directions.

"in at least
one
horizontal
direction"

'248 claims
1, 10, and
14

Plain and ordinary
::neaning.

In at least one of the
two horizontal
directions.

"in at
least one
direction"

'248
claims 2
and 11

Plain and ordinary
meaning.

In at least one of
the two horizontal
directions.

Plaintiffs

argue

that

the

terms

related to

the

term "two

horizontal directions," .i.e., "both horizontal directions," "in at
least one horizontal direction," and "in at least one direction,"
need no further construction as their meanings are also readily
apparent,

and

that

defendants'

proposed

constructions

consistent with their plain and ordinary meanings. 24

are

Defendants

respond that their proposed constructions of these terms is needed
to insure consistency and avoid confusion because these phrases are
not consistently worded with reference to the term "two horizontal
directions" used throughout the claims. 25

Asserting that it "takes

no issue with the fact that these terms should be understood to

24

Plaintiff's Opening Brief, Docket Entry No. 40, p. 13.

25

Defendants' Response, Docket Entry No. 41, p. 2 0.
-19-

relate back to 'two horizontal directions,' " 26 plaintiff argues that
these

phrases

need no

construction because

their meanings

are

"readily apparent even to lay judges." 27
In determining the plain and ordinary meaning of terms, courts
must consider the contexts in which the terms are used.
Inc.

v.

Walt

Disney Co._,

346 F.3d 1082,

1088

(Fed.

See ACTV,
Cir.

2003)

("[T]he context of the surrounding words of the claim also must be
considered in determining the ordinary and customary meaning of
those terms.") .

When viewed in the context of the surrounding

claim language the related terms need no construction because the
surrounding language makes it readily apparent that the related
terms relate back to the term "two horizontal directions" that the
court

has

already

ordinary meaning.
related

to

the

concluded

is

subject

only

to

is

plain

and

Accordingly, the court concludes that the terms
term

"two

horizontal

directions,"

i.e.,

"both

horizontal directions," "in at least one horizontal direction," and
"in at least one direction," need no further construction as their
meanings are also readily apparent.

26

Plaintiff' s Reply, Docket Entry No. 44, p. 10.

27

Id.

(quoting Phillips, 415 F.3d at 1314).
-20-

2.

"Deliberately Non-Uniform" and Related Terms
(a)

"Deliberately Non-Uniform"

Disputed Term
"deliberately
non-uniform"

'24 8
claims 12, 10-11,
14-15

Asserting
uniform"

Plaintiff's
Construction

Patent

that

\Jot random and nonuniform.

the parties

do

not

Non-uniform or
irregular spacing
between seismic
receivers and/or
seismic source points
intended for more
accurate reconstruction
of the seismic data
acquired.

dispute

the

word

"non-

is used interchangeably with "irregular" and needs

construction in the '248 Patent,
dispute

Defendants'
Construction

about

construction
d]efendants'
definition

the
of

the

term
word

28

no

plaintiff argues that "the only

"deliberately

non-uniform"

"'deliberately'

concerns
[but

that

construction does not actually provide any definite
for

'deliberately.' " 29

Asserting

that

the

word

"deliberately" means "not random," plaintiff argues that
[t]he claims confirm that the sensor placement is
"deliberate" and not random by requiring specific spacing
between the sensors.
See, e.g., ['248 Patent] at claim
1 ("wherein the spacing between any two seismic receivers
in the deliberately non-uniform direction varies by a
distance of at least five percent"); claim 2 ("the
receivers are spaced in a deliberately non-uniform
spacing in both horizontal directions where the largest
spacing is at least five percent larger than the smallest
spacing in at least one direction"); claim 10 ("wherein
28

Plaintiff's Opening Brief, Docket Entry No. 40, p. 14.

29

Id. See also Defendants' Response, Docket Entry No. 41, p. 20
("Because the terms 'non-uniform' and 'irregular' are not in
dispute, only the meaning of 'deliberately' remains in dispute.").
-21-

the spacing between any two seismic source points in the
deliberately non-uniform direction varies by a distance
of at least five pe~cent"); see also similar language in
claims 11, 14, and 15. 30
Plaintiff also argues that defendants "improperly seek to redraft
the single word 'deliberate' into a significantly longer and more
confusing phrase. " 31
Asserting
critical

that

objective

plaintiff's
and

use

description

of

that

distinguish prior art are limiting,
proposed

construction

of

of

critical

the

patent's

objective

to

defendants argue that their

"deliberately"

as

"intended

for

more

accurate reconstruction of the seismic data acquired," is based on
plaintiff's description of the patent's critical objective and is
not only consistent with the intrinsic record but is also more
closely aligned with how a person of ordinary skill in the art
would

understand

the

word

"deliberately"

than

is

plaintiff's

proposal to construe the word to mean "not random." 32
Citing the declaration of defendants' expert, Ozgur Yilmaz,
plaintiff replies that defendants do not dispute that the plain and
ordinary

meaning

defendants'

of

"deliberately"

is

"intentional,

and

that

reliance on the intended result instead of the plain

and ordinary meaning is improper because "claims are not 'limited

30

Plaintiff's Opening Brief, Docket Entry No. 40, p. 15.

31

Id.

32

Defendants' Response, Docket Entry No. 41, p. 23.

at 16.

-22-

to features found in what the written description presents as mere
embodiments, where the claim language is plainly broader.' " 33
In their sur-reply defendants argue that "neither deliberate
nor intentional mean 'not random' as the non-uniform or irregular
spacing pattern could be deliberately or intentionally random and
nothing

in the

specification or the

spacing pat tern. " 34

claims precludes

a

random

Defendants also argue that neither they nor

their expert ever conceded that "intentional" means "not random." 35
The court is not persuaded by either the plaintiff's proposed
construction of "deliberately" as "not random" or the defendants'
proposed

construction

of

"deliberately"

as

"intended

for

accurate reconstruction of the seismic data acquired."
concludes that the term

~deliberately

more

The court

non-uniform" is subject only

to its plain and ordinary meaning, i.e., intentionally irregular.
As

detailed

above,

the

parties

ordinary meaning of "non-uniform"

is

agree

that

the

plain

and

"irregular," and that the

plain and ordinary meaning of "deliberately" is "intentional."
Neither party has cited any intrinsic or extrinsic evidence showing

33

Plaintiff's Reply, Docket Entry No. 44, p. 11 (citing In re
Paost Licensing Diqi tal Camera Patent Litigation, 7 7 8 F. 3d 12 55
(Fed. Cir. 2015) (citin9 Phillips, 415 F. 3d at 1323)).
See also
plaintiff's Opening Brief, Docket Entry No. 40, p. 14 (ar~Juin~J that
"Defendants improperly incorporate one benefit of the various
embodiments in the '248 Patent; i.e., more accurate reconstruction
of the seismic data").
34

Defendants' Sur-Reply, Docket Entry No. 46, p. 10.

3sid.

-23-

that "deliberately" or "intentional" should be construed to mean
either "not random" as plaintiff contends or "intended for more
accurate reconstruction of the seismic data acquired" as defendants
contend.

Plaintiff bases its argument that "deliberately" means

"not random" on a citation from the detailed description of the
invention stating that "a random placement of receivers

is not

desired," 36 and on citations to the claims that plaintiff argues
"confirm that the sensor placement is 'deliberate' and not random
by requiring specific spacing between the sensors." 37

But none of

the claims contain the word "random," and nothing in either the
description

of

arrangement

of

the

invention

receivers

or

or

the

sources

claims

from

precludes

being

random.

the
The

description of the invention merely states that random arrangement
is not desired, not that random arrangement is precluded.
Defendant's argument that "deliberate" should be construed as
an expression of the patent's critical objective, i.e., "intended
for more accurate reconstruction of the seismic data acquired,"
fares no better because the caselaw on which defendants rely only
stands for the unremarkable principle that the meaning of a claim
may be limited by a preferred embodiment or feature where it is

36

Plaintiff' s Opening Brief, Docket Entry No. 40, p. 15 (citing
'248 Patent, 4:17-18, Docket Entry No. 1-5, p. 16 ("a random
arrangement of receivers or sources is not desired")).
37

Id. (citing claims 1-2, 10-11, and 14-15, '248 Patent, 10:3155, 11:24-47, 12:6-39, Docket Entry No. 1-5, pp. 19-20).
-24-

described as important to the invention.
1301-02; Alloc,

Inc. v.

1361, 1368, 1370
( 2004)

See Toro,

199 F.3d at

International Trade Commission,

(Fed. Cir. 2003),

cert. denied,

342 F.3d

124 S. Ct. 2390

(limiting the claims by requiring the objective of "play,"

even though the term is not cited in the claims because "the #907
specification read as a whole leads to the inescapable conclusion
that

claimed

the

embodiment.").

invention

must

include

play

in

every

Defendants cite no authority for their contention

that a disputed term used in less than all of the claims can or
should be interpreted as a construct of the invention's critical
Accordingly,

objective.
"deliberately

non-uniform"

the
is

court
not

concludes

limited

to

that
"not

the

term

random"

as

plaintiff argues, or to "intended for more accurate reconstruction
of the seismic data acquired," as defendants argue but,

instead,

needs no construction and is subject only to is plain and ordinary
meaning, "intentionally irregular."
(b)

Terms Related to "Deliberately Non-Uniform"

Disputed
Term

Patent

"the
deliberately
non-uniform
direction"

'248 claims
1, 10, and
14

"the nonuniform
spacing
direction"

'248 claims
3-9, 12-13,
and 16

"the nonuniform
direction"

Plaintiff's
Construction

'248 claims
3-9, 12-13,
and 16

Plain and ordinary
meaning.

-25-

Defendants'
Construction
At least one of the two
horizontal directions
in which the spacing
between seismic
receivers and/or
seismic source points
is deliberately nonuniform.

Plaintiff argues that the terms related to "deliberately nonuniform," i.e., "the deliberately non-uniform direction," "the nonuniform spacing direction," and "the non-uniform direction," need
no

further

construction

understood. 38
constructions

Plaintiff
recite

the

because

their
that

argues
plain

and

meanings

are

defendants'

ordinary meaning,

easily
proposed

but

also

include an extraneous clause related to spacing that is redundant
because the

surrounding claim language already

between receivers and/or source points. 39

recites

spacing

Asserting that plaintiff

"appears to agree that the meaning of each phrase should be the
same, " 40

defendants

argue

that

a

common

construction,

as

they

propose, is needed to insure consistency and avoid confusion. 41
When viewed in the context of the surrounding claim language
the

terms

related

to

"deliberately

non-uniform"

need

no

construction because the surrounding language makes their meanings
readily apparent while defendants' proposed construction introduces
redundancy

38

related

to

spacing

because

the

surrounding

claim

Plaintiff's Opening Brief, Docket Entry No. 40, p. 17.

39

Id.
See also Plaintiff's Reply, Docket Entry No. 44, p. 14
("the meaning of these related phrases is 'readily apparent even to
lay judges'").
40

Defendants' Response, Docket Entry No. 41, p. 2 4
Plaintiff's Opening Brief, Docket Entry No. 40, p. 17)
41

Id. at 24-25.
-26-

(citing

language already recites spacing between receivers and/or source
For example, Claim 1 states, in pertinent part:

points.

(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 nonuniform, wherein the receivers are not aligned in at
least one of the two horizontal directions and wherein
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
smallest spacing; 42
and Claim 3 states:
[t] he method according to claim 1, wherein at least
twenty percent of the deployed receivers are spaced more
than ten percent further apart in the non-uniform spacing
direction than the smallest spacing between receivers in
the non-uniform direction. 43
The contexts in which the related terms are used in Claims 4-10,
12-14,

and 16 are comparable to the contexts quoted above from

Claims 1 and 3,

and make it similarly apparent that the related

terms need no construction.

Accordingly, the court concludes that

the terms related to the term "deliberately non-uniform," i.e.,
"the deliberately non-uniform direction," "the non-uniform spacing
direction,"
construction

and

"the

because

non-uniform
their

apparent even to lay judges.

direction,"

meanings

are

need

easily

no

understood

'2 4 8 Patent, Exhibit 4 to Plaintiff's Complaint,
Docket Entry No. 1-5, p. 19 (emphasis added).
Id.
added) .

at

10: 5 6-60,

and

See Phillips, 415 F.3d at 1314.

42

43

further

Docket

Entry

-27-

No.

1-5,

p.

19

10: 33-38,
(emphasis

3.

"Wherein the Receivers Are Not Aligned in at Least One of
the Two Horizontal Directions"

Disputed Term

Patent

"wherein the
receivers are
not aligned in
at least one
of the two
horizontal
directions"

'248 claims
1, 10 and
14

Asserting
construe

this

that

Plaintiff's
Construction
Plain and ordinary
meaning.

"[it]

phrase

Defendants'
Construction

is

unclear

containing

Wherein the receivers
are not aligned in
common lines or
straight columns in at
least one of the two
horizontal directions,
which is intended for
more accurate
reconstruction of the
seismic data acquired.

why

the

Defendants

term

'two

seek

to

horizontal

directions' independently from and differently from, the other 'two
horizontal directions' terms," and that this disputed term can be
broken down into two separate clauses: "wherein the receivers are
not

aligned,"

directions, " 44

and

"in

plaintiffs

at

least

argue

one

that

it

of

the

needs

two
no

horizontal
construction

because the claim language is not disputed and because defendants
improperly seek to limit the invention by introducing extraneous
words and importing an intended benefit of the invention into the
construction of a single term.

45

Plaintiff argues that defendants

seek to add, "which is intended for more accurate
reconstruction of the seismic data acquired." However,
this additional language is virtually identical to the
language Defendants proposed to construe the term
"deliberately non-uniform."
However,
there is no

44

45

Plaintiff's Opening Brief, Docket Entry No. 40, p. 18.

Id. at 18-20.
No. 44, p. 14.

See

also

Plaintiff's

-28-

Reply,

Docket

Entry

overlapping claim language supporting injecting this
additional language in a distinct claim term.
Other
than an attempt to pollute the claims with this phrase at
every opportunity, there is no legal basis that supports
adding an identical limitation to define other terms
using completely different language. 46
Plaintiff argues that assuming defendants'
proposed constructions were adopted (which they should
not be) , claim 1 of the '2 4 8 [Patent] would have many
internal
inconsistencies,
including
different
descriptions for two horizontal directions and repeating
the intended benefit clause twice for different elements,
47
when importing such benefits is improper.
Defendants

respond

that

their

proposed

construction

is

supported by the specification and the prosecution history neither
of which are addressed in plaintiff's Opening Brief. 48

Defendants

argue that their proposed construction
addresses "wherein the receivers are not aligned" and
retains "in at least two horizontal directions" for
context since the proposed construction is intended to
construe (not replace) the disputed term in the claim .
. . The remainder of [defendants'] proposed construction
includes words [plaintiff] used to describe the claimed
invention and distinguish the prior art. 49
Defendants explain that
[d]uring prosecution of the '248 Patent, [plaintiff] used
the same term "straight columns" and "common lines" to
distinguish the prior art.
[Plaintiff] argued:

46

Plaintiff's Opening Brief, Docket Entry No. 40, p. 19.

47Id.
48

Defendants' Response, Docket Entry No. 41, pp. 25-29.

49

Id.

at 25.
-29-

It can be seen from geophone arrays in figures
12 and 13 of Clay that the geophones are all
in common lines or straight columns from the
top to bottom of each array.
In other words,
the geophones are all aligned in a single
direction
in both these
two dimensional
arrays.
By contrast, the amended claims
define that at least the source points or the
receivers are not aligned in at least one of
the two horizontal directions.
Conoco's April 2, 2015 Response (Ex. J) at pp. 7-8.
Conoco relied on the same terms and argument to
distinguish the prior art during prosecution of the
related foreign counterpart application in Australia.
Conoco's Australian Response
(Ex.
K)
at p.
2.
[Defendants'] proposed construction therefore, does not
improperly import limitations from the specification into
the claims but, instead, uses the same words Conoco used
(common lines or straight columns) to distinguish the
prior art. 50
Asserting that "[t]he critical objective of the spacing between the
receivers
acquired

is

to

achieve

more

accurate

seismic

data, " 51

defendants

reconstruction

argue

that

of

the

"[w] hether

the

spacing between the receivers is deliberately non-uniform or not
aligned,

it

is

unequivocally

'intended

for

more

accurate

reconstruction of the seismic data acquired.'" 52
After carefully considering all

of the

evidence the

court

concludes that the term "wherein the receivers are not aligned in
at

least one of the two horizontal directions"

is

sufficiently

50

Id. at 26 (citing Conoco' s April 2, 2105 Response, pp. 7-8,
Exhibit J, Docket Entry No. 41-11, pp. 8-9; and Conoco's Autralian
Response, p. 2, Exhibit K, Docket Entry No. 41-12, p. 3).
51

52

Id. at 27.

Id. at 28.
No. 46, pp. 13-14.

See also Defendants'
-30-

Sur-Reply,

Docket Entry

clear to make even resort to a dictionary unnecessary.
America, 358 F.3d at 1373 (as a general rule ordinary English words
"whose

meaning

is

construction) .

clear

Neither

customary meaning in

thE~

and

unquestionable"

party

has

argued

need

the

no

further

existence

of

a

art that differs from or contradicts the

plain and ordinary meaning of either the disputed term or the words
used

in the disputed term.

Moreover,

for

the

reasons

already

stated in§ II.A.1, above, the court has already concluded that the
term

"two

horizontal

directions"

and

the

related

terms

"both

horizontal directions," "in at least one horizontal direction," and
"in at least one direction," need no construction because their
plain and ordinary meanings are readily apparent.
415 F.3d at 1314.

See Phillips,

Nor is the court persuaded that anything in

either the specification or the prosecution history clearly support
the defendant's contention that the plaintiff intended to use the
term "wherein the receivers are not aligned in at least one of the
two horizontal directions two horizontal directions" in a manner
other than according to its plain and ordinary meaning.

Although

the parties acknowledge that an intended benefit of the invention
is more

accurate

reconstruction

of

the

seismic

data

acquired,

defendants fail either to cite any authority or to offer any cogent
reason why this or any other disputed term that does not appear in
all of the claims should be construed to include a statement of the
invention's intended benefit.

-31-

Defendants also argue that they propose using the same words
that plaintiff chose to distinguish the prior art,
such words

are

applied to

phrase in the claims,
easily understood as

common

lines

horizontal

or

"wherein the

straight

of

(not

replace)

the

disputed

plaintiff's intended meaning is clear and

directions,

reconstruction

construe

and that when

the

columns

which

is

seismic

receivers are not aligned in
in

at

least

intended

data

one

for

acquired. " 53

of

the

two

more

accurate

See,

Spectrum

International, 164 F.3d at 1378 (explicit meanings given to claim
terms

in

order

accordingly)

to

overcome

prior

In

particular,

prosecution of the

'248 patent,

art

will

defendants

limit
argue

those
that

terms
during

plaintiff argued in a April 2,

2015, Response to a Final Office Action Dated January 5, 2015, that
rejected Claims 1-2, 4-1:2, and 14-19 as anticipated by Clarence S.
Clay, Jr.:
It can be seen from geophone arrays in figures 12
and 13 of Clay that the geophones are all in common lines
or straight columns from the top to bottom of each array.
In other words, the geophones are all aligned in a single
direction in both of these two dimensional arrays.
By contrast, the amended claims define that at least
the source points or the receivers are not aligned in at
least one of the two horizontal directions in which the
source points or receivers are laterally spaced from each
other.
Arrangements of receivers and/or source points
including this limitation are depicted in figure 5 of the
present application (the receivers are not aligned in a
direction from the bottom to the top of the page), figure
6 (in which the receivers are not aligned in any

53

Defendants' Response, docket Entry No. 41, pp. 28-29.
-32-

direction), figure 9 (in which the source points are not
aligned in a direction running from the left to the right
of the page), figure 10 (in which the source points are
not aligned in a direction running from the bottom to the
top of the page) and figure 11 (in which neither the
source points nor the receivers are aligned in any
directions[)].
Clay does not teach such an
particular due
to
the
requirement
54
mathematically precise formula.

arrangement,
to
follow

in
its

Defendants argue that these statements were made on January 5,
in

2015,

response

plaintiff's
response

to

claims.

used

the

an

office

action

But defendants
proposed

language

rejecting

overlook the
"common

many
fact

lines

or

of

the

that

the

straight

columns" only when describing figures 12 and 13 in the Clay patent.
In other words plaintiff used "common lines or straight columns" in
the prosecution history to describe the alignment shown in Clay and
did not use that language either to describe its own invention or
to

modify

or

limit

the

word

"align."

The

court

therefore

concludes that the prosecution history does not support defendants'
proposed construction of the disputed term because defendants have
shown only that plaintiff used "common lines or straight columns"
to describe the type of alignment shown in Clay and have failed to
cite any evidence

showing that plaintiff used that

language to

modify or limit the word "align" to mean only "common lines or
straight

columns."

Moreover,

the

54

narrow

Response to Final Office Action Dated
Exhibit J, Docket Entry No. 41-11, pp. 8-9.
-33-

construction

January

5,

that

2015,

defendants propose for this term contradicts the following passage
in the specification:
It should be understood that receiver lines and source
lines may still be implanted with varying degrees of
freedom,
but noting that there are no particular
requirement that the orientation of the source line and
receiver
lines
be
orthogonal
for
the
wavefield
reconstruction work.
The lines may be oriented with
variations in direction, patterns or layout. Some of the
more common in the industry are the brick, zig-zag, slash
and inline survey designs. Non-uniform line and station
spacing for wavefield reconstruction work equally well
with each of these survey technique[s] . 55
Defendants thus have not shown that sufficient reasons exist to
import their limiting construction of the disputed term "wherein
the receivers are not aligned in at least one of the two horizontal
directionsu into the clear language of the claims.

B.

Terms from the '193 Patent
1.

"Determining Optimal Sampling Grid During Seismic Data
Reconstruction a

Disputed Term

Patent

"determining
optimal sampling
grid during
seismic data
reconstruction"

'193
claim 1

Plaintiff's
Construction
Preamble is not
limiting.

Defendants'
Construction
Preamble is limiting.

The term "determining optimal sampling grid during seismic
data reconstructionu appears in the preamble of Claim 1 of the '193

55

'248 Patent, 10:6-16, Docket Entry No. 1-5, p. 19.
-34-

patent.

The parties agree that this term needs no construction,

but dispute whether it is limiting.
4 7 3,

47 8

56

Citing Rowe v. Dror, 112 F.3d

(Fed. Cir. 1997) , and Catalina Marketing International,

Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002),
plaintiff argues that this term is not limiting because "[i]t is
black letter law that preambles are not limiting 'where a patentee
defines a structurally complete invention in the claim body and
uses the preamble to only state the purpose or intended use for the
invention.' " 57 Asserting that "the preamble merely provides context
for the claim and does not

'breathe life'

into it, " 58 plaintiff

argues that
Claim 1 includes four complete elements that, on their
own and without the preamble, 'define[] a structurally
complete invention.'
Rowe, 112 F.3d at 478.
Accordingly, the preamble should not be limiting and
Defendants' position should be rejected. 59
Asserting that Claim 1 "recites the steps of a method structure

as

argued

by

[plaintiff],"

that

"Claim

1

not

requires

constructing an optimization model," and that "[t]he Parties agreed
construction

of

an

optimization

model

is

'a

model

used

for

optimizing the reconstruction of the seismic data,'" 60 defendants

56

p.

Joint Claim Construction Statement,

57

Plaintiff's Opening Brief, Docket Entry No. 40, p. 20.

58

Id. at 21.

Docket

Entry No.

3.

s9Id.
60

Defendants' Response, Docket Entry No. 41, p. 9.
-35-

38,

argue that "[t]he preamble [] not only gives meaning to claim 1 but
is also used with step
claimed invention.

1161

(a)

to define the subject matter of the

Defendants cite Bell Communications Research,

Inc. v. Vitalink Communications, Corp., 55 F.3d 615, 620 (Fed. Cir.
1995), and Catalina Marketing,

289 F.3d at 810-11,

in support of

their argument.
Reasserting
structurally
(1)

that

"elements

complete

"defendants'

invention,

(a)-(d)
1162

of

claim

plaintiff

are

1

argues

a

that

conclusory argument that the body of claim 1 is

'ill-defined' lacks any explanation as to what the claim is lacking
or how the preamble would give it essential meaning,

1163

(

2)

the

preamble language in dispute "is merely language 'stating a purpose
or intended use,

1164

and (3)

the claim language,

"[t]here is no basis in the preamble,

the patent specification,

or the prosecution

history to find that the preamble language is a limitation on the
claimed invention.

1165

Asserting that defendants misapply Catalina

Marketing and Bell Communications to try and reach a

different

result, plaintiff argues that
Defendants stretch these cases beyond their limits by
suggesting that the agreed construction for the term

61Id.
62

Plaintiff' s Reply,

Docket Entry No.

-36-

44, p. 16.

"optimization model" is somehow a concession that the
preamble should limit Claim 1. Response, p. 5. However,
the agreed construction has a completely different
context and includes different words.
Defendants'
position that the preamble language appears in the body
of the claim is undermined by their own statement that,
in "other words," the agreed construction effectively
means the same thing as the preamble (which it does not).
Neither Bell Communications nor Catalina Marketing
support such a logical leap between actual recitation and
"other words."
Indeed, Defendants cannot now try to
import additional claim limitations into the agreed
definition of "optimization model." 66
In pertinent part the patent states:
What is claimed is:
1.

computer-implemented method
for
determining
optimal
sampling
grid
during
seismic
data
reconstruction, the method comprising:

A

a)

constructing an optimization model, via a
computing processor, given by min~JJSujj 1 s. t .jJRub~2so wherein S is a discrete transform matrix,
b is seismic data on an observed grid, p is
seismic data on a reconstruction grid,
a
represents noise level in observed data, and
matrix R is a sampling operator;

b)

defining mutual coherence as
wherein r
is sampling grid, r 1 are Fourier transform
coefficients,
and n is number of
elements in r,

c)

deriving a mutual coherence proxy, wherein the
mutual coherence proxy is a proxy for mutual
coherence when S is over-complete and wherein
the mutual coherence proxy is exactly the
mutual
coherence
when
S
is
a
Fourier
transform; and

d)

determining a sample grid r®

66

Id. at 17.

67

'193 Patent,

arg min, p (r).

18: 5-29, Docket Entry No. 1-3, p. 26.
-37-

67

Before

Claim

1

describes

the

actual

steps

of

the

method

patented by the '193 Patent, it provides an introductory "preamble"
stating:

"A computer- implemented method for determining optimal

sampling

grid

during

seismic

" 68

Generally,

comprising:

data

reconstruction,

the

method

the preamble does not limit the

claims.

DeGeorge v. Bernier, 768 F.2d 1318, 1322 n. 3 (Fed. Cir.

1985).

However,

the preamble may be

limiting "when the

claim

drafter chooses to use both the preamble and the body to define the
subject matter of the claimed invention." Bell Communications, 55
F.3d at 620.

If the preamble is "necessary to give life, meaning

and vitality" to the claim it should be construed as limiting.
Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951).

Whether statements

made in the preamble are limiting is determined "on the facts of
each case in view of the claimed invention as a whole."
Stencel,

828

F.2d 751,

754

(Fed.

Cir.

1987).

In re

See also Applied

Materials, Inc. v. Advanced Semiconductor Materials America, Inc.,
98 F.3d 1563, 1572-73 (Fed. Cir. 1996)

("Whether a preamble stating

the purpose and context of the invention constitutes a limitation
of the claimed process is determined on the facts of each case in
light

of

the

overall

form

of

the

claim,

and the

invention as

described in the specification and illuminated in the prosecution
history.").

68

Id. at 18: 5-7, Docket Entry No. 1-3, p. 26.
-38-

Defendants argue that the term "determining optimal sampling
grid during seismic data reconstruction" should be interpreted as
a claim limitation.

Pla~ntiff

responds that this is simply a term

that states the purpose or intended use for the claimed invention.
The court is persuaded by the defendants' argument.
term

"determining

optimal

sampling

grid

during

Although the
seismic

data

reconstruction" states the purpose or intended use for the claimed
invention, the court is not persuaded by plaintiff's argument that
the body of the claim defines a complete invention.

A preamble to

a claim "has the import that the claim as a whole suggests for it."
Bell Communications,

55 F. 3d at 620.

The preamble language at

issue is directed to "determining optimal
seismic data reconstruction."

sampling grid during

That aspect of the invention is

again stated in the first paragraph of the claim:
a)

constructing an optimization model, via a computing
processor, given by [an equation] wherein S is a
discrete transform matrix, b is seismic data on an
observed
grid,
p
is
seismic
data
on
a
reconstruction grid, o represents noise level in
observed data, and matrix R is a sampling operator
69

"Determining

optimal

reconstruction,"

is

sampling

thus

the

grid

essence

during
of

this

seismic
invention;

data
its

appearance in the preamble of Claim 1 gives "life and meaning" to
the manipulative steps.

See Kropa, 187 F.2d at 152 (stating that

a preamble is limiting when it is "necessary to give life, meaning

69

Id. at 18: 8-13, Docket Entry No. 1-3, p. 26.
-39-

and vitality to

the

claims

or

Consideration of the

counts") .

preamble gives meaning and purpose to the manipulative steps in
this claim.

The first step recites "constructing an optimization

model, via a computing processor" using a stated equation.

In the

absence of the preamble's stated objective of "determining optimal
sampling

grid

during

seismic

data

"constructing an optimization model,
empty language.

and determining

Griffin

v.

The

a

preamble

Bert ina,

via computing processor" is

"determining

Similarly,

sample
is

285

grid alone

thus
F.3d

Constructing an optimization

a

optimal

are

necessary

1029,

1033

(construing the preamble to be limiting)
that

sampling

merely

is

additionally

supported

academic

limitation.
(Fed.

Cir.

See
2002)

The court's conclusion

grid

during

seismic

reconstruction" used in the preamble of Claim 1 is a
limitation

term

"determining a sample grid" in the fourth

step of the method has no purpose.

exercises.

the

What is one optimizing a model to do?

without the preamble,

model

reconstruction,"

by

the

fact

necessary

that

Parties agreed construction of an optimization model is

data

"[t] he
'a model

used for optimizing the reconstruction of the seismic data.' " 70
Accordingly, the court concludes that the term "determining optimal
sampling grid during seismic data reconstruction" is limiting.

70

Defendants' Response, Docket Entry No. 41, p. 9.
See also
Joint Claim Construction Statement, Docket Entry No. 38, pp. 3-4.
-40-

2.

"Deriving a Mutual Coherence Proxy, Wherein the Mutual
Coherence Proxy is a Proxy for Mutual Coherence When S is
Over-Complete and Wherein the Mutual Coherence Proxy is
Exactly the Mutual Coherence When S is a Fourier
Transform"

Disputed Term
"deriving a
mutual coherence
proxy, wherein
the mutual
coherence proxy
is a proxy for
mutual coherence
when s is overcomplete and
wherein the
mutual coherence
proxy is exactly
the mutual
coherence when s
is a Fourier
transform"

The

term

Plaintiff's
Construction

Patent

Defendants'
Construction

Plain and ordinary
meaning.

'193

claim l

Indefinite.

I

I

!

l

i

I
I
"deriving

I

a

mutual

coherence

proxy,

wherein the

mutual coherence proxy is a proxy for mutual coherence when S is
over-complete and wherein the mutual coherence proxy is exactly the
mutual coherence when S is a Fourier
of claim 1 of the '193 patent.

transfo~m"

is

~

(c) or step 3

Plaintiff argues that this term is

readily understood by those of ordinary skill in the art and should
be construed consistent with its plain and ordinary meaning.
Plaintiff argues

that

defendants'

contention

that

this

71

term is

indefinite is based on the declaration of their expert, Dr. Yilmaz,

71

Plaintiff's Opening Brief, Docket Entry No. 40, pp. 21-22.
See also Plaintiff's Reply, Docket Entry No. 44, pp. 18-21 (citing
Exhibit F to Plaintiff's Opening Brief, Rebuttal Declaration of
Dr. Justin Romberg in Support of ConcocoPhillips Company's Claim
Construction ("Romberg Rebuttal Declaration"), Docket Entry No. 407 , pp . 4- 5 <JI ~ 7 6- 7 8 ) .
-41-

"who omits any reference to the definition of S being over-complete
in his

declaration,

coherence proxy.'
Asserting

which

key

to

understanding

the

'mutual

1172

that

"deriving

neither plain nor ordinary,
inherently

is

indefinite

a

1173

M[utual]

C [oherence]

proxy

is

defendants argue that this term is

because

it

renders

claim

internally

1

inconsistent and conflicts with the teaching of the specification. 74
Quoting the specification, defendants argue that "[e]ven if such an
obscure

phrase

had

a

plain

and

ordinary

meaning,

[plaintiff]

unequivocally defined the result of EQ [i.e., equation] 37 as 'our
mutual coherence proxy.'

skill in the art

1175

Asserting that "a person of ordinary

. would clearly understand that the M[utual]

C[oherence] proxy derived in step (c) and the M[utual] C[oherence]
defined in step (b) would have different meanings because they are
different terms,

1176

defendants argue that "[b) ecause

[plaintiff]

chose to use the same equation to define the M[utual] C[oherence]
proxy derived in step (c) and the M[utual] C[oherence] in step (b),

72

Plaintiff's Opening Brief, Docket Entry No. 40, p. 24.

73

Defendants' Response, Docket Entry No. 41, p. 12.

74

Id. at 10.

75

Id. at 12 (quoting '193 Patent, 14:63-65, Docket Entry No. 1-

3, p. 24).
76

Id. at 13.
-42-

it renders steps (b) and (c) internally inconsistent and therefore,
indefinite. 77

Defendants argue that

[t]he specification further confirms the equations
defining the M[utual] C[oherence] proxy (EQ 37) and
M[utual] C[oherence] (EQ 32) must, indeed, be different.
Using
the
same
equation
to
define
the
M[utual]
C[oherence]
in step
(b)
and derive
the M[utual]
C[oherence] proxy in step (c) thus, conflicts with the
teaching of the specification. 78
In support of their argument, defendants cite Trustees of Columbia
University in the City of New York v. Symantec Corp., 811 F. 3d 135 9
1366-67 (Fed. Cir. 2016)

(holding the claims indefinite because the

claims describe the step of extracting machine code instructions
from something that does not have machine code instructions); and
Competitive Technologies,
965-66 (Fed. Cir. 200 6)
and thus,

Inc. v.

Fujitsu Ltd., 185 F. App'x 958,

(holding the claim internally inconsistent

indefinite because the

"address means"

limitation of

claim 5 requires ISA structures, and the "sustain means" limitation
of the same claim excludes ISA structures).
Defendants' arguments address the indefiniteness of the claim
in which the disputed term appears, not the indefiniteness of the
disputed term,

i.e.,

"deriving a mutual coherence proxy,

wherein

the mutual coherence proxy is a proxy for mutual coherence when S
is over-complete and wherein the mutual coherence proxy is exactly
the mutual coherence when S is a Fourier transform."

77Id.
78

Id. at 14.
-43-

Defendants

recognize that Step (b) defines mutual coherence, which is referred
to twice in step (c), and that Step (c) compares mutual coherence
defined

in

defendants

step
cite

(b)
only

with
one

mutual
equation

coherence
in

the

Although

proxy.

specification

as

an

equation for calculating mutual coherence, i.e., EQ 32, the court
reads

the

specification

calculating mutual

as

identifying

coherence,

i.e.,

EQs

at

least

31-32

equations

and

for

37, 79 and as

explaining that "Equation 37 can be computed efficiently using the
fast Fourier transform, and is our mutual coherence proxy.nso
An indefinite claim is invalid if its language "read in light
of the specification delineating the patent, and the prosecution
history, fail to inform, with reasonable certainty, those skilled
in the art about the scope of the invention.n
Biosig Enterprises,
a

determination

of

Inc~,

134 S. Ct. 2120, 2124

indefiniteness

is

Nautilus,
(2014).

intertwined

Inc. v.
Although

with

claim

construction, a court must first determine what the terms used in
a claim mean before it can determine whether the claim is invalid
for indefiniteness.

See Harrah's Entertainment v. Station Casinos,

Inc., 321 F.Supp.2d 1173, 1176 (D. Nev. 2004), aff'd, 154 F. App'x
928 (Fed. Cir. Nov. 15, 2005).

79

'193 Patent, 3:46-57, o.nd 13:59--14:65 (Equations 31-32 and
37), 14: Docket Entry No. 1-3, pp. 19 and 24.
80

Id. at 14:63-67, Docket Entry No. 1-3, p. 24.
-44-

"the

weight

of

determinations

at

Generally,
indefiniteness
litigation."

the
the

jurisprudence
Markman

stage

disfavors
of

patent

CSB-System International Inc. v. SAP America,

Inc.,

2011 WL 3240838 at *20 & n.16 (E.D. Pa. July 28, 2011).
Several
principles
mitigate
against
ruling
on
indefiniteness at the Markman stage: first, the high
burden of proof on the party challenging a patent claim
for indefiniteness; second, the fact that a claim is not
indefinite merely because the parties dispute its
meaning; and, finally, the dispositive effect of a ruling
on indefiniteness, which invalidates the claim entirely.
Gilead Sciences,

Inc. v. Mylan,

2015 WL 1534067,

*2

Inc., Civil Action No.

(N.D.W.Va. April 6,

1:14CV99,

Although a court

2015).

may find a term invalid for indefiniteness after construing the
term, what a term means to a person of ordinary skill in the art is
a separate question from whether it is sufficiently definite to put
others in the field on notice regarding the bounds of the claims.
Id.

For these reasons,

courts have elected to wait to address

indefiniteness at the s·Jmmary judgment stage.

Id.

(denying the

defendant's indefiniteness argument without prejudice, subject to
renewal during summary judgment).

See also Manna tech,

Inc.

v.

TechMedia Health, Inc., Civil Action No. 3:06-CV-00813-P, 2009 WL
3614359 at *15

(N.D.

Tex.

Oct.

29,

2009)

(consideration of the

indefiniteness issue was not appropriate at the claim construction
phase).
1364,

But see Interval Licensina LLC v.

1377-78

(Fed. Cir.

2014)

AOL,

Inc.,

7 66 F. 3d

(upholding judgment of invalidity

due to indefiniteness made during claim construction).

-45-

The court

recognizes

that

it

is well within its power to

consider indefiniteness as part of the claim construction process,
In the present case, however, it does

if it make sense to do so.
not

make

sense

construction.

to

Whether 'II

(c)

claim

during

indefiniteness

consider

of Claim 1 of the

'193

Patent is

indefinite because it is mathematically impossible for the mutual
coherence proxy derived in step (c) pursuant to the disputed term,
i.e.,

"deriving

a

mutual

coherence

proxy,

wherein

the

mutual

coherence proxy is a proxy for mutual coherence when S is overcomplete and wherein the mutual coherence proxy is exactly the
mutual

coherence

when

S is

a

Fourier

transform,"

to meet

the

condition stated in step (b) when S is over-complete, is a matter
more

appropriately addressed

on

summary

See

judgment.

Gilead

Sciences, 2015 WL 1534067 at *2 (determining that consideration of
the

indefiniteness

issue

construction phase);

3.

was

not

appropriate

at

the

claim

Mannatech, 2009 WL 3614359 at *15 (same).

"Stochastic Global Optimization Method"

Disputed Term

"stochastic
global
optimization
method"

Patent

'193
claim 4

Defendan ts'
Construction

Plaintiff's
Construction

Plain and ordinary
meaning.

Indefinite.

The term "stochastic global optimization method" appears in
the claim 4 of the
claim 1,

wherein

'193 patent which states:

the

sample

grid is
-46-

"4.

The method of

determined via

stochastic

global optimization method." 81

Plaintiff argues that the disputed

term "stochastic global optimization method" is readily understood
by those of ordinary skill in the art and should be construed
consistent

with

its

plain

and

ordinary meaning. 82

Chemical Co. v. Nova Chemicals Corp.

(Fed. Cir. 2015), cert. denied, 136 S. Ct. 2452

Dow

803 F.3d 620,

(Canada),

Citing

630

(2016), and Teva

Pharmaceuticals USA, Inc. v. Sandoz, Inc., 789 F.3d 1335 (Fed. Cir.
2015), defendants argue that this term is indefinite because "the
'193

Patent

fails

to

disclose

any

known

"stochastic

global

optimization method" in the specification and neither the

'193

Patent nor its prosecution history offer any guidance as to which
stochastic global optimization method should be used among the many
different available prior art methods. 83

Plaintiff replies that

claim 4 is not indefinite because defendants' expert concedes that
there are multiple methods that fall within the scope of the term
"stochastic global optimization method, " 84 and because the

'193

Specification discloses two types of stochastic global optimization

81

Id. at 18:34-35, Docket Entry No. 1-3, p. 26.

82

Plaintiff's Opening Brief, Docket Entry No. 40, p. 25.

83

Defendants' Response, Docket Entry No. 41, p. 16.

84

Plaintiff's Sure-Reply, Docket Entry N. 44, p. 22 (citing
Rebuttal Declaration of Ozgur Yilmaz, Exhibit H to Plaintiff's
Opening Brief, Docket Entry No. 40-9, pp. 8-9 ~ 17).
-47-

methods, i.e., the Monte Carlo simulations described at 16:12-20,
and a randomized greedy algorithm. 85
Although defendants' arguments address the indefiniteness of
the

claim

in

indefiniteness

which
of

the

the

disputed

disputed

term,

term

appears,

not

i.e.,

"stochastic

the

global

optimization method," the dispute over this term is analogous to
the dispute over the term "molecular weight" that
Circuit addressed in Teva, 789 F.3d at 1338.
involved

three

relevant

measures

for

the

Federal

The dispute in Teva

molecular

weight

peak

average molecular weight ("M p"), number average molecular weight
("M n"), and weight average molecular weight ("M w") -where each
measure was calculated in a different manner and each typically had
a different value.

Id.

Observing that neither the claims nor the

specification contained an explicit definition of molecular weight,
id.,

and

that

the

prosecution

history

contained

inconsistent

statements, id. at 1342-1344, the court held that the claims were
indefinite.

Id.

at

1344-45.

This

was

so

even

though

the

patentee's expert testified that someone skilled in the art could
determine which method was the most appropriate.
1341.

Id.

at 1338,

For essentially the same reasons, i.e., because neither the

claims nor the specification contain an explicit definition of
"stochastic global optimization method," the court concludes that
the term is indefinite.

85

Id. at 22-24.
-48-

III.

Order

For the reasons stated above, the court adopts the following
constructions for the disputed terms of '248 Patent:

Patent

Disputed Term

Construction
Plain and ordinary meaning.
Plain and ordinary meaning.

"in at least one horizontal
direction"

Plain and ordinary meaning.

"in at least one direction"

Plain and ordinary meaning.

"deliberately non-uniform"

Plain and ordinary meaning.

"the deliberately non-uniform
direction"

Plain and ordinary meaning.

"the non-uniform spacing
direction"

Plain and ordinary meaning.

"the non-uniform direction"

Plain and ordinary meaning.

"wherein the receivers are not
aligned in at least one of the
two horizontal directions"

Plain and ordinary meaning.

"determining optimal sampling
grid during seismic data
reconstruction"

Preamble is limiting.

"deriving a mutual coherence
proxy, wherein the mutual
coherence proxy is a proxy for
mutual coherence when s is overcomplete and wherein the mutual
coherence proxy is exactly the
mutual coherence when s is a
Fourier transform"

Because the parties' arguments
address the indefiniteness of
the claim in which the
disputed term appears, not the
indefiniteness of the term,
this issue is better left to a
later stage of this action.

"stochastic global optimization
method"

'193

"two horizontal directions"
"both horizontal directions"

'248

Indefinite.

SIGNED at Houston, Texas, on this

26th day o

ril, 2019.

SIM LAKE
UNITED STATES DISTRICT JUDGE

-49-