Transocean and Maersk are both deep water drilling companies.
In this case, Transocean appealed the decision of the US district court granting summary judgment as a matter of law (JMOL) that Maersk did not infringe on the claims of three of Transocean’s patents 6,047,781, 6,085,851, and 6’068,069 because the claims in these patents are invalid because of obviousness and lack enablement.
The claims in Transocean’s patents are directed towards drilling vessels that allow for dual activity to speed up the process of drilling. Below is a representative claim and image of Transocean’s invention.
1. A drillship having a bow, a stern and an intermediate moon pool between the bow and stern and being fitted to conduct offshore drilling operations through the moon pool and into the bed of a body of water, said drillship including:
a derrick positioned upon the drillship and extending above the moon pool for simultaneously supporting drilling operations and operations auxiliary to drilling operations through the moon pool;
a first means connected to said derrick for advancing tubular members through the moon pool, to the seabed and into the bed of the body of water;
first means, connected to said derrick, for handling tubular members as said tubular members are advanced through the moon pool by said first means for advancing;
a second means connected to said derrick for advancing tubular members through the moon pool, to the seabed and into the bed of the body of water;
second means, connected to said derrick, for handling tubular members as said tubular members are advanced through the moon pool by said second means for advancing for conducting operations extending to the seabed auxiliary to said drilling operations; and
means positioned within said derrick for transferring tubular assemblies between said first means for advancing tubular members and said second means for advancing tubular members to facilitate simultaneous drilling operations and operations auxiliary to said drilling operations, wherein said drilling activity can be conducted from said derrick by said first or second means for advancing and said first or second means for handling tubular members and auxiliary drilling activity can be simultaneously conducted from said derrick by the other of said first or second means for advancing and the other of said first or second means for handling tubular members.
Initially, the district court held that Transocean’s patents were a mere combination of known concepts of tubular drilling stations for pipe handling that transfer drilling tubes from one advancing station to the other station, so drilling pipes could be created at a faster rate.
Specifically, the district court held that Transocean’s patents were a mere combination of Horn (Great Britain Patent No. 2,041,836) and Lund (US patent No. 4,850,439), and also that the specification does not adequately the claims limitations relating to the pipe transfer assembly as claimed.
On appeal, the court of Appeal reversed the district courts holding in part that the claims were not obvious and they were enabled. The court of appeals held that Horn and Lund teach each and every limitation of the asserted claims at issue. Specifically, the court of appeals held that Horn discloses a drilling rig with a single derrick that supports two advancing stations, and Lund discloses a pipe transfer assembly that can move tubular members between the two advancing stations. Therefore, these two references present a prima facie case of obviousness, but a prima facie case is not a conclusion on the ultimate issue of obviousness.
The court of appeals stated, that a prima facie case is determined based on the first three factors of Graham as shown below, but a party is also free to introduce evidence relevant to the fourth Graham factor, “objective considerations” that may be sufficient to disprove or rebut a prima facie case of obviousness. In this case, the court reasoned that the following factors were enough to rebut the prima facie case of obviousness. Specifically, using the following factors laid out in Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17-18 (1966) that the differences between what was known in the art would not have been obvious at the time of the invention to one skilled in the art based on the following secondary considerations. The specific factors analyzed by the court of appeals were:
(1) the scope and content of the prior art;
(2) the differences between the prior art and the claims at issue;
(3) the level of ordinary skill in the field of the invention; and
(4) objective considerations such as commercial success, long felt but unsolved need, and the failure of others.
- 1. Commercial Success
- Transocean charged roughly 12% more for dual-activity rigs than single activity rigs, and some customers specifically asked for dual-activity rigs
- Maersk had sought to “incorporate the same efficiency improvements features as used by their competition, by incorporating dual activity technology”
- From this evidence, a reasonable jury could conclude that Transocean’s dual-activity rigs have been a commercial success that had a nexus to the claimed features in the patent
- 2. Industry Praise and Unexpected Results
- There were articles in magazines that praised Transocean’s dual-activity rig was critical to the future of offshore drilling, and that Transocean’s dual-activity rig allows for 20-40% faster tripping of drill strings
- A second article stated that Transocean’s technology was one of fifty key events in the history of offshore drilling
- BP engineers had doubted that dual-activity rigs would cost costs, but after analyzing Transocean’s rigs BP concluded that the dual-activity rig was even more efficient than Transocean had originally suggested.
- 3. Copying
- Maersk had documentation that what their rig was essentially a copy of Transocean’s
- Maersk employees had documented that they didn’t need to worry about infringing Transocean’s patents because they believe Transocean’s patents couldn’t be protected, and that Maersk did not infringe because Transocean’s patents are invalid in view of prior art
- 4. Industry Skepticism
- Transocean had provided evidence that people in the industry were worried that dual-activity rigs would cause two drill strings to collide with each other
- 5. Licensing
- Transocean offered testimony that multiple companies licensed dual-activity drilling patents despite being under no threat of litigation, and licenses were much higher for the dual activity drill
- 6. Long Felt but Unsolved Need
- Transocean presented evidence that dual-activity technology satisfied a long-felt need for greater drilling efficiency because the industry had been searching for ways to increase efficiency by building sections
- The court of appeals concluded that that Transocean’s patents fulfilled a need in the drilling industry for a more efficient way to drill in deep water by allowing offline building of drill string and also including an auxiliary advancing station capable of lowering drilling components to the seabed.
AUSTIN PATENT ATTORNEY TAKE-A-WAYS:
- This is one of the few cases were a prima facie case of obviousness has been rebutted. I believe that it was necessary for each of the factors to be met to overcome the prima facie presumption. Moreover, I also believe that this case hinged on Maersk’s employees stating their rig was a copy of Transocean’s as well as the documentation that they didn’t believe they told clients that their rigs didn’t infringe because Transocean’s patents would be invalid.
- This case provides a nice framework to re-litigate the prima facie obviousness determination, where juries are able to decide what is a prima facie case of obviousness upon learning about the prior art in detail.
- Even with the court’s holding in this case, I wouldn’t feel comfortable going forward with litigation where my client would have to overcome a prima facie case of obviousness. This is because this determination would have to be decided by a jury, and there would need to be evidence from the opposition that the oppositions copied the patented technology as well as publications about the benefits of the patented technology.